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1134.01   Third Party Submissions Under 37 CFR 1.290  

MPEP SECTION SUMMARY This section covers third party submissions under 37 C.F.R. 1.290. The America Invents Act (AIA) amended 35 U.S.C. 122 by providing a mechanism for third parties to submit printed publications in another party’s patent application. Third-party submissions under 37 CFR 1.99 were eliminated as of September 16, 2012. This section covers the time for filing a third-party submission along with the content requirements for a third party submission. The type of information that may be submitted in a third-party submission is limited to patents, published patent applications, and other printed publications of potential relevance to the examination of a patent application. However, any third party may submit for consideration and inclusion in the record of a patent application, any patent, published patent application, or other printed publication of potential relevance to the examination of the application.

I.   TIMELINESS REQUIREMENT

While there is no limit on the number of submissions that one third party may make in an application, a third-party submission must be filed prior to the earlier of:

• The date a notice of allowance is given or mailed in the application; or
• The later of:
• (i) Six months after the date on which the application is first published by the Office, or
• (ii) The date the first rejection under 37 CFR 1.104 of any claim by the examiner is given or mailed during the examination of the application.

Thus, a third-party submission cannot be filed in an application where a notice of allowance has been issued in the application, regardless of whether that notice of allowance is subsequently withdrawn.

• If a notice of allowance has not been issued in an application, a third-party submission may be filed prior to the date that is six months after the date of publication by the Office or prior to the date of the first rejection of any claim by the examiner, whichever is later.

The time period will be initiated only by publications “by the Office” under 35 U.S.C. 122 and 37 CFR 1.211, and will not be initiated by a publication by the World Intellectual Property Organization (WIPO).

• Thus, an earlier publication by WIPO of an international application designating the United States will not be considered a publication that will initiate the time period for an application which entered the national stage from the international application.

The filing of an RCE does not reset the time period for filing a third-party submission.

• Additionally, the filing of an RCE in an application does not preclude a third party from making a third-party submission in the application.

A.   Time Periods Are Statutory and Cannot Be Waived

The time periods provided for in 37 CFR 1.290(b) are statutory and cannot be waived.

• Thus, the Office cannot grant any request for extension of the 37 CFR 1.290(b) time periods.
• Third-party submissions that are not timely filed will not be entered or considered and will be discarded.

The statutory time period for making a third-party submission will not be tolled by a non-compliant submission.

Accordingly, making a third-party submission at the earliest opportunity increases the likelihood there will be sufficient time to make a resubmission should the initial submission be found non-compliant.

• A third party who previously filed a non-compliant submission may file another complete submission, provided the statutory time period for filing a third-party submission has not closed.

The abandonment of an application will not toll the statutory time period for making a third-party submission.

B.   A Third-Party Submission Is Filed On Its Date of Receipt in the Office

A third-party submission is filed on its date of receipt in the Office as set forth in 37 CFR 1.6.

The holiday/weekend rule set forth in 37 CFR 1.7(a) applies to a third-party submission.

II.   CONTENT REQUIREMENTS FOR A THIRD-PARTY SUBMISSION

37 CFR 1.290(d) identifies the required content of a third-party submission as follows:

• a document list, identifying the publications, or portions of publications, submitted;
• a concise description of the asserted relevance of each item identified in the document list;
• a legible copy of each item identified in the document list, other than U.S. patents and U.S. patent application publications;
• an English language translation of any non-English language item identified in the document list;
• statements by the party making the submission that:
• a) the party is not an individual who has a duty to disclose information with respect to the application under 37 CFR 1.56; and
• b) the submission complies with the requirements of 35 U.S.C. 122(e) and 37 CFR 1.290; and
• any required fee or the 37 CFR 1.290(g) statement that the fee exemption applies to the submission.

A.   Document List

Any third-party submission must include a document list identifying the documents, or portions of documents, being submitted in accordance with 37 CFR 1.290(e).

37 CFR 1.290(e) sets forth the requirements for identifying the items in the 37 CFR 1.290(d)(1) document list.

2.   Listing Requirements

Section 1.290(e) requires the document list include a heading that identifies the list as a third-party submission.

• 37 CFR 1.290(e) also requires that the document list identify on each page of the list, the application number (i.e., the series code and serial number) of the application in which the submission is being filed.
• This requirement is consistent with the requirement set forth in 37 CFR 1.98(a)(1)(i) for applicant information disclosure statement listings.
• 37 CFR 1.290(e) further requires that U.S. patents and U.S. patent application publications be listed in a separate section from other items in the document list.
• Separating the listing of U.S. patents and U.S. patent application publications from the listing of other items in the document list will facilitate printing the U.S. patents and U.S. patent application publications considered by the examiner in a third-party submission on the face of the patent.

  (a)   U.S. Patents and U.S. Patent Application Publications

Each U.S. patent must be identified by patent number, first named inventor, and issue date.

Each U.S. patent application publication be identified by patent application publication number, first named inventor, and publication date.

(b)   Foreign Patents and Published Foreign Patent Applications

Each foreign patent or published foreign patent application be identified by the country or patent office that issued the patent or published the application; the applicant, patentee, or first named inventor; an appropriate document number; and the publication date indicated on the patent or published application.

The requirement for U.S. patents and patent application publications to be identified by first named inventor, and for foreign patents and published patent applications to be identified by the applicant, patentee, or first named inventor, is intended to aid in identifying the items in the document list in the event the application number, publication number, or other appropriate document number data is in error, for example, inadvertently transposed.

(c)   Non-Patent Publications

Each non-patent publication be identified by author (if any), title, pages being submitted, publication date, and where available, publisher and place of publication.

If no publication date is known, the third party must provide evidence of publication.

• This requirement recognizes that some documents may not indicate a date of publication.
• Where the actual publication date of a non-patent document is not known, a third party must, at a minimum, provide a date of retrieval (e.g., the date a Web page was retrieved) or a time frame (e.g., a year, a month and year, a certain period of time) when the document was available as a publication for purposes of identifying the document by publication date, in addition to including evidence that establishes the document as a publication.

B.   Concise description of relevance

37 CFR 1.290(d)(2) requires a concise description of the asserted relevance of each item identified in the document list in view of the statutory requirement of 35 U.S.C. 122(e)(2)(A) that each third-party preissuance submission be accompanied by a “concise description of the asserted relevance of each submitted document.”

A concise description of relevance for an item is a statement of facts regarding the submitted evidence (i.e., the patent, published patent application, or other publication) and will not, itself, be treated as evidence.

• The concise description should set forth facts, explaining how an item listed is of potential relevance to the examination of the application in which the third-party submission has been filed.
  
  

1.   The concise description of relevance for a listed publication can be presented in any format that would best explain to the examiner the relevance of the accompanying document, such as in a narrative description or a claim chart.

• A concise description of relevance is most effective when it draws the examiner’s attention to the potential relevance of a submitted document to the examination of an application.
• A concise description that points out the relevant pages or lines of the respective document may be an effective way to draw the examiner’s attention to the potential relevance of the document, particularly where the document is lengthy and complex and the third party can identify a highly relevant section, such as a particular figure or paragraph.
  
  

2.   Content

At a minimum, a concise description of relevance must be more than a bare statement that the document is relevant because such a statement does not amount to a meaningful concise description.

3.   Not an invitation to participate in the prosecution of the application

The statutory requirement for a concise description of relevance should not be interpreted as permitting a third party to participate in the prosecution of an application.

• While a concise description of relevance may include claim charts (i.e., mapping various portions of a submitted document to different claim elements), the concise description of relevance is not an invitation to a third party to propose rejections of the claims or set forth arguments relating to an Office action in the application or to an applicant’s reply to an Office action in the application.

Unlike the concise explanation for a protest under 37 CFR 1.291, which allows for arguments against patentability, the concise description of relevance required by 35 U.S.C. 122(e) is limited to a factual description of a document’s relevance.

• The concise description of relevance, therefore, does not permit third parties to submit arguments against patentability or set forth conclusions regarding whether one or more claims are patentable. In other words, the concise description of relevance must not rise to the level of a protest under 37 CFR 1.291.

A concise description of relevance for a submitted document is not considered evidence but, rather, a statement of facts regarding the submitted evidence.

• Accordingly, the Office will not consider a declaration as evidence, where such declaration is submitted as a concise description of relevance for a document.
• Where a third party submits a declaration for the concise description of relevance, the concise description of relevance must not amount to an attempt at third-party participation in the examination of the application.

C.   Copies

37 CFR 1.290(d)(3) requires submission of a legible copy of each item identified in the document list, other than U.S. patents and U.S. patent application publications.

37 CFR 1.290(d)(1) provides for the listing of either entire documents or portions of documents. Thus, where only a portion of a document is listed as an item in the document list, a copy of that portion and not a copy of the entire document (e.g., where a particular chapter of a book is listed and not the entire book) must be submitted.

• Further, when a copy of only a portion of a document is submitted, copies of pages of the document that provide identifying information (e.g., a copy of the cover, the title page, the copyright information page, etc.) should also be submitted.
• Copies of U.S. patents and U.S. patent application publications need not be submitted because such documents are readily accessible to examiners.

D.   Translations

An English language translation of any non-English language item must be identified in the document list.

E.   Statements

A statement by the party making the submission that the party is not an individual who has a duty to disclose information with respect to the application (i.e., each individual associated with the filing and prosecution of the patent application) must be supplied.

F.   Fee (if necessary)

The payment of a fee is required for every ten items or fraction thereof listed in the document list, except where the submission is accompanied by the statement set forth in 37 CFR 1.290(g).

The Office will determine the item count based on the document list.

• Thus, if a U.S. patent or a U.S. patent application publication is identified in the document list, but a copy of the item is not submitted (i.e., because a copy is not required), the listed U.S. patent or U.S. patent application publication will be counted toward the document count.
• If a copy of an item is submitted but the item is not identified in the document list, the item will not be counted or considered and will be discarded.

Additionally, if a third party identifies an item in the document list that is only a portion of a publication, the portion of the publication will be counted as one item. Further, while a third party is permitted to cite different publications that are all available from the same electronic source, such as a Web site, each such publication listed will be counted as a separate item.

1.   Fee exemption

An exemption from the fee requirement includes where a third-party submission listing three or fewer total items is the first third-party submission by a third party, or a party in privity with the third party, in a given application.

• Where one third party takes advantage of the fee exemption in an application, another third party is not precluded from also taking advantage of the fee exemption in the same application as long as the third parties are not in privity with each other.
  
  

2.   Fee is required for a resubmission after a finding of non-compliance

Where a third party receives a notification of non-compliance for a third-party submission, the third party may make necessary revisions to its submission, limited to addressing the non-compliance, and resubmit the now corrected submission provided the statutory time period for filing a third-party submission has not closed.

• A resubmission of a third party submission after receipt of a notice of non-compliance must be complete as the Office will not accept amendments to a noncompliant submission.
• To be complete, the appropriate fee must accompany any resubmission made in response to a notification of non-compliance.

To satisfy the fee requirement for a resubmission after a finding of non-compliance where the proper fee set forth in 37 CFR 1.290(f), or a proper fee exemption statement under 37 CFR 1.290(g), accompanied the non-compliant submission, the third party may request that the Office apply the previously-paid fee or fee exemption statement to the resubmission.

• "The determination of whether the fee requirement for a resubmission is satisfied will be made at the sole discretion of the Office."
  

3.   Small entity discount

A small entity discount is available for third-party submissions where applicable.

• A third party is not eligible for the micro entity discount.

III.   “PRINTED PUBLICATIONS”

35 U.S.C. 122(e)(1) and 37 CFR 1.290(a) limit the type of information that may be submitted in a third-party submission to patents, published patent applications, and other printed publications of potential relevance to the examination of a patent application.

• A third-party submission may include U.S. patents and patent application publications, foreign patents and published foreign patent applications, as well as non-patent documents that qualify as publications, such as published articles, Office actions issued in published U.S. patent applications, and communications from foreign patent offices issued in published foreign patent applications.

A.   Evidence of Publication

In order for a submission to be compliant under 35 U.S.C. 122(e) and 37 CFR 1.290, each item submitted for consideration and inclusion into the file of a patent application must be a publication.

B.   Need Not Be Prior Art

There is no requirement that the information submitted be prior art documents in order to be considered by the examiner.

C.   Cumulative Information/Information Already of Record

37 CFR 1.290(a) does not prohibit third-party submissions that include patents, published patent applications, or other printed publications that are already of record in an application, where the submission is otherwise compliant.

D.   Of “Potential Relevance to the Examination of the Application”

The submitter must believe the documents being submitted are relevant to the extent that the submitter can provide the concise description of the asserted relevance of each document submitted.

IV.   FILING A THIRD-PARTY SUBMISSION

A.   For Consideration and Inclusion in a “Patent Application”

Any third party may submit for consideration and inclusion in the record of a patent application, any patent, published patent application, or other printed publication of potential relevance to the examination of the application.

• A third-party submission may be directed to any non-provisional utility application, design application, or plant application filed before, on, or after September 16, 2012.
• Any continuations, divisionals, and continuations-in-part of such applications (as applicable) are also eligible to receive third-party submissions.
  
  

1.   Applies to Abandoned and Unpublished Applications

A third-party submission made within the statutory time period, and otherwise compliant, will be entered even if the application to which the submission is directed has been abandoned.

2.   Cannot Be Filed In Provisional Applications or Post-Issuance Proceedings

Third-party submissions may not be directed to:

• provisional applications,
• issued patents,
• reissue applications, and
• reexamination proceedings.

B.   “Any Third Party”

Any third party” may file a preissuance submission.

• Thus, a third-party submission may be filed by any member of the public, including, for example, private persons and corporate entities.
• However, the third party must not be the applicant or any individual who has a duty to disclose information with respect to the application

C.   No Service on Applicant Required

Third parties are not required to serve the applicant with a copy of the third-party submission.

D.   Certificate of Mailing/Transmission Does Not Apply

The United States Postal Service (USPS) Express Mail service provisions do apply to a third-party submission.

F.   Paper Filing

Third-party submissions may be filed in paper via first-class mail, United States Postal Service (USPS) Express Mail service, or delivery by hand.

V.   NO THIRD-PARTY PARTICIPATION

The involvement of a third party in filing a submission ends with the filing of the submission.

VI.   TREATMENT OF A THIRD-PARTY SUBMISSION

A.   Submissions Screened for Compliance Prior to Entry in an Application

A third-party submission may not be entered or considered by the Office if any part of the submission is not in compliance with 35 U.S.C. 122(e) and 37 CFR 1.290.

• The Office will enter a third-party submission that is compliant; however, any part of a third-party submission that is non-compliant with respect to the requirements of 35 U.S.C. 122(e), whether or not the third-party submission is otherwise compliant with 37 CFR 1.290, will prevent entry of the entire third-party submission into the record.
  
  

1.   Notification to Third Party of Non-Compliant Third-Party Submission

A third-party may request a courtesy electronic mail message (e-mail) notification in the event their third-party submission is found to be non-compliant.

• No notification to the third party regarding its third-party submission will be issued where a third party does not provide an e-mail address with the submission.
  
  

2.   Notification to Applicant of Compliant Third-Party Submission

An applicant will be notified upon entry of a compliant third-party submission in their application file where the applicant participates in the Office's e-Office Action program, and the contents of a compliant third-party submission will be made available to the applicant after it has been entered in the IFW of the application.

3.   Applicant Need Not Reply To a Third-Party Submission

In the absence of a request by the Office, an applicant need not reply to a third-party submission.

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